Appeal No. 2006-2569 Page 4
Application No. 09/485,245
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993) (citations omitted). The test of obviousness is “whether the teachings of
the prior art, taken as a whole, would have made obvious the claimed invention.”
In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Appellant argues that the rejection is in error as they have “discovered that
short (6-8 mers) dried primers unexpectedly resist self-annealing and provide
improvements in activity and labeling intensity compared with longer dried
primers.” Appeal Brief,3 page 6. Appellant relies on Examples 2 and 4, arguing
that those examples demonstrate unexpected results “by identifying a critical
difference in self-priming (self-annealing) activity and labeling intensity between
short dried 6-8 mers which resist self-annealing compared with longer . . . dried
9-mers (and above) . . . used in the art.” Id. (emphasis in original).
Appellant contends further that the rejection should be reversed because
“Godiska and Shen fail to teach the desirability of short primers (6-8 mers) in a
dried primer system or that 6-8 mers would behave differently with respect to
self-priming activity and labeling intensity than do 9-mers.” Id. Godiska,
appellant asserts, teaches liquid 6-mers, but fails to teach the criticality of the 6-
3 All references to the “Appeal Brief” are to the “Revised Brief on Appeal,” dated September 12,
2005.
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